Q. In South Korea, can the grounds for refusal based on the prior similar trademark(s) be overcome by buying the cited trademark(s)?

A. Becoming the recorded owner of the cited trademark(s) by recording the assignment(s) before the time of determining the registrability is a way to overcome a provisional refusal or an office action based on that specific cited trademark(s).

It is because even if the prior mark is similar to the applicant’s applied mark, the prior mark would be an obstacle in registering the applied mark only when prior mark is not belongs to the applicant.

Article 34 (Trademarks Ineligible for Trademark Registration)(1) Notwithstanding Article 33, none of the following trademarks shall be registered:

7. Any trademark used for goods identical or similar to the designated goods, which is identical or similar to the registered trademark of another person (excluding any registered collective mark with geographical indication) based on first to file;

(2) Paragraph (1) and whether an applicant for trademark registration (hereinafter referred to as "applicant") correspond to another person under the relevant provisions shall be determined based on the time a decision corresponding to any of the following is made (hereinafter referred to as "decision on whether to grant trademark registration"): Provided, That in cases falling under paragraph (1) 11, 13, 14, 20 and 21, whether an applicant corresponds to another person under the relevant provision shall be determined based on the time an application for trademark registration is filed:

1. Decision to reject trademark registration under Article 54;

2. Decision to grant trademark registration under Article 68.

Article 35 (First-to-File)(1) Where at least two applications for trademark registration are filed on different days with respect to the same or similar trademark to be used on the same or similar goods, only the first person who files an application may obtain registration of such trademark.

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